`571-272-7822
`
`
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` Paper 13
`
`Date: February 22, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY
`LIMITED,
`Petitioner,
`
`v.
`
`GODO KAISHA IP BRIDGE 1,
`Patent Owner.
`
`
`
`Case IPR2016-01249
`Case IPR2016-01264
`Patent 6,538,324 B11
`
`
`
`
`Before JUSTIN T. ARBES, MICHAEL J. FITZPATRICK, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`
`
`FITZPATRICK, Administrative Patent Judge.
`
`
`
`
`ORDER
`37 C.F.R. § 42.121
`
`
`
`
`1 This Order employs a joint caption, as it governs both of the identified
`inter partes reviews. The parties may not use a joint caption unless
`authorized.
`
`
`
`IPR2016-01249
`IPR2016-01264
`Patent 6,538,324 B1
`
`A conference call was held on February 21, 2017, with counsel for
`
`Petitioner, Taiwan Semiconductor Manufacturing Company Limited, and
`
`Patent Owner, Godo Kaisha IP Bridge 1, and the panel. The call was
`
`requested by Patent Owner for the purpose of meeting its obligation under
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`37 C.F.R. § 42.121(a) to confer with the Board prior to filing a motion to
`
`amend.
`
`The two inter partes reviews involve the same patent, namely, U.S.
`
`Patent No. 6,538,324 B1, and the same claims, namely claims 1–3, 5–7, and
`
`9. See Paper 7 in both proceedings.
`
`Patent Owner may file a motion to amend in one or both inter partes
`
`reviews. If Patent Owner’s motion(s) to amend would be contingent on one
`
`or more challenged claims being held unpatentable, it should file a motion to
`
`amend in each review.
`
`If Patent Owner files a motion to amend in each review and the
`
`motions are substantively-identical to one another, the motions should
`
`include a statement to that effect.
`
`
`
`It is:
`
`ORDERED that Patent Owner has satisfied its obligation under
`
`37 C.F.R. § 42.121(a) to confer with the Board prior to filing a motion to
`
`2
`
`amend.
`
`
`
`
`
`
`
`3
`
`IPR2016-01249
`IPR2016-01264
`Patent 6,538,324 B1
`
`
`
`PETITIONER:
`
`E. Robert Yoches
`bob.yoches@finnegan.com
`
`Stephen Kabakoff
`stephen.kabakoff@finnegan.com
`
`Joshua Goldberg
`joshua.goldberg@finnegan.com
`
`
`
`PATENT OWNER:
`
`Michael Fink
`mfink@gbpatent.com
`
`Neil Greenblum
`ngreenblum@gbpatent.com
`
`Arnold Turk
`aturk@gbpatent.com
`
`
`
`
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